Fields v Klaus Kobec Ltd & Anor

Fields v Klaus Kobec Ltd & Anor

The court found that Mr Cohen and KKL infringed Mr Fields' registered trade marks by continuing to use the 'klauskobec.com' domain name and threatening to use the mark after consent was withdrawn on 25 December 2004. The 'own name' defence applied to use of the company name and on watch backplates due to contractual requirements with football clubs, but not to the continued use of the domain name. The statutory defence of earlier right failed as KKL/KKIL had not established sufficient goodwill at the relevant dates. The registrations were not invalid as there was no bad faith or earlier right established. The counterclaim for invalidity was dismissed.

Parties
Claimant: Antoni Fields; First Defendant: Klaus Kobec Limited; Second Defendant: Michael Cohen
Jurisdiction
England and Wales
Judgment Date
02 March 2006
Procedural Posture
Civil Intellectual Property / Judgment After Trial
Outcome
Claim partially allowed; counterclaim dismissed
Legal Topics
Trade Marks, Passing Off, Infringement, Statutory Defences, Bad Faith Registration
Intellectual Property Trade Marks Passing Off Infringement Statutory Defences Bad Faith Registration

Case Brief

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Parties

Antoni Fields

Claimant

Klaus Kobec Limited

First Defendant

Michael Cohen

Second Defendant

Procedural Posture

Civil Intellectual Property / Judgment After Trial

Legal Issues

  1. 1 Whether the defendants infringed the claimant's registered trade marks for 'KLAUS KOBEC'
  2. 2 Whether statutory defences (earlier right, own name) apply to the alleged infringements
  3. 3 Whether the registrations of the trade marks are invalid on relative or absolute grounds (bad faith)

Ratio Decidendi

The court found that Mr Cohen and KKL infringed Mr Fields' registered trade marks by continuing to use the 'klauskobec.com' domain name and threatening to use the mark after consent was withdrawn on 25 December 2004. The 'own name' defence applied to use of the company name and on watch backplates due to contractual requirements with football clubs, but not to the continued use of the domain name. The statutory defence of earlier right failed as KKL/KKIL had not established sufficient goodwill at the relevant dates. The registrations were not invalid as there was no bad faith or earlier right established. The counterclaim for invalidity was dismissed.

Court Disposition

Claim partially allowed; counterclaim dismissed

Orders

  • Declaration of infringement in respect of use of 'klauskobec.com' domain name and threats to use the mark after 25 December 2004
  • Statutory defences upheld for use of company name and on watch backplates